UDRP : OMPI D2000-0532 20 07 2000 UNIONE CALCIO S C T HANCOKS

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Unione Calcio Sampdoria SpA v. Titan Hancocks

Case N° D 2000-0532

1. Parties

The Complainants is the Italian Company Unione Calcio Sampdoria SpA., represented by Roy Goldberg from Schnader Harrison Segal & Lewis LLP.

The Respondent is the British Corporation Titan Hancocks, represented by Michael Burdon.

2. The domain name and the registrar

The domain name at issue is « sampdoria.com ».

The registrar is Network Solutions, Inc.

3. Procedural history

The WIPO Arbitration and Mediation Center (the Center) received the complaint by e-mail on May 31, 2000, and in hard copy on June 2, 2000, and notified it on June 8, 2000, day of the commencement of the administrative proceeding.

The complaint was filed in accordance with the requirements of the Rules and the Supplemental Rules.

Payment has been properly made and the single Panelist agrees with the Center’s assessment concerning the complaint’s compliance with the formal requirements.

The complaint was properly notified in accordance with the Rules and the response was timely filed.

The single Panelist accepted his appointment and has submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the WIPO Arbitration and Mediation Center.

The date scheduled for the decision is July 17, 2000.

4. Factual background

The complaint is based on:

– the Italian SAMPDORIA trademark n° 00785361 filed in March 19, 1999, which is protected for « sporting and cultural activities »,

– the American SAMPDORIA trademark application filed on September 7, 1999, with priority on March 19, 1999, in classes 25 for clothes and in class 41 for sporting and cultural activities concerning soccer.

The Complainant refers to a trademark registration in China, Switzerland and Monaco through the international registration n° 717311 and to other trademark applications with priority on March 19, 1999, in Argentina, Brazil, Indonesia and the European Union, but none of the exhibits justify these applications.

The Complainant registered the domain names « sampdoria.net » and « sampdoria.org » on March 16, 2000, and runs a website at these addresses.

On March 23, 1999, the Respondent registered « sampdoria.com ».

On April 13, 2000, the Complainant sent an e-mail to the Respondent, requesting the transfer of « sampdoria.com ».

The domain-name administrator replied, stating that:

«- the domain was registered for a planned website, but as you’ve probably gathered the site is not yet completed,

– under the circumstances, obviously it would not be in our best interests to transfer this address to you. That said, we’d be happy to listen to any suggestions for the future use of the domain ».

5. Parties’contentions

A. Complainant

5.1 The domain name is identical or confusingly similar to the trademark

« sampdoria.com » is presented as « virtually identical » to the trademark SAMPDORIA.

5.2 The Respondent has no rights or legitimate interests in respect of the domain name

SAMPDORIA is the name of a soccer club created in 1946, this is the abbreviation of « Unione Calcio Sampierdarenese Doria » which derives from the merger between two famous Italian soccer clubs, the « Andrea Doria » founded in 1900 and the « Sampierdarenese Sezione Calcio » founded in 1911.

The Sampdoria has won the European Cup Championship in 1990 and the Italian soccer Championship in 1991 and has international stars.

It currently plays in an Italian professional soccer league and has fan clubs organized throughout the world.

The Complainant has registered the SAMPDORIA trademark and uses it throughout the world to market and promote sporting goods and other commercial products and services through its website and other marketing channels.

It publishes a magazine called SAMPDORIA.

The SAMPDORIA trademark is a strong and distinctive trademark and is a well-known trademark in the meaning of article 16 of the TRIP’S agreements, which extends the Paris Convention provisions.

The Respondent could not be identified as a listed business.

SAMPDORIA is arbitrary and fanciful; it is neither the name of a geographical area, nor a descriptive name.

It is only the name of Complainant’s soccer club.

5.3 The domain name has been registered and is being used in bad faith

The Respondent had the purpose of selling, renting or otherwise transferring the domain name to the Complainant.

It could not ignore the fact that SAMPDORIA was widely and uniquely associated with Complainant’s soccer club, which played matches in the United Kingdom, like in 1992, the European Cup Final in Wembley stadium.

The club hired British players and the British press commented it in December 1998, early 1999.

In its response of April 13, 2000, the Respondent tried to sell the domain name, by stating « we’d be happy to listen to any suggestions for the future use of the domain ».

His implied offer to sell the domain constitutes bad faith use of the domain name.

The website « sampdoria.com » will generate a likelihood of confusion with the Complainant’s trademark.

This use dilutes and tarnishes the rights on the trademark SAMPDORIA.

Bad faith use exists because:

– SAMPDORIA trademark « has a strong reputation and is widely known »,

– Respondent can not provide any evidence of its good faith and has not been making a legitimate non-commercial or fair use of the domain name,

– Respondent « has taken active steps to conceal its true identity, by operating under a name that is not registered as a business name »,

– Respondent intents to use the domain name to infringe Complainant’s trademark and to make profit out of this use, creating a likelihood of confusion with the SAMPDORIA trademark,

– Respondent deprives the Complainant of the easiest way to develop its activity on the Internet.

That is why the transfer is requested.

B. Respondent

5.4 To the question: the domain name is identical or confusingly similar to the trademark

Trademarks are not registered and the Complainant has not proved evidence of the European trademark application.

The Respondent has not established relevant rights in the most relevant countries.

« sampdoria.com » is similar in the form, but not identical to the trademarks, as it includes the suffix « .com ».

The Respondent has not associated the domain name with any goods or services.

The Complainant has not provided any evidence of confusion for proving infringement or passing off in the UK.

The Complainant ha its own site « sampdoria.it ».

5.5 To the question: the Respondent has no rights or legitimate interests in respect of the domain name

The Respondent was first to register the domain name and has paid the registration fee, has its legal ownership and, accordingly a legitimate right and interest in it.

It has not use the domain name in any way that could conflict with the rights and/or legitimate interests of any third party.

It did not try to « extract money from the Complainant or misappropriate the goodwill of the Complainant » and proposed to adopt measures in order to avoid any possible confusion by its use of the domain name.

The Respondent intends to make a legitimate non-commercial and fair use of the domain name to develop a sport and football fan related site using « firstfans.com » related to domain names such as « sampdoria.com ».

The Respondent is ready to mention disclaimers on its site and to have hyperlinks to the « official site », if necessary.

5.6 To the question : the domain name has been registered and is being used in bad faith

The Respondent denies that it has registered the domain name in bad faith because:

– the Complainant does not have any registered trademark in the UK and does not provide evidence that it has goodwill or reputation in the mark SAMPDORIA in the UK or that it has protection within the meaning of article 16 of TRIPS,

– the Respondents refutes the allegation that SAMPDORIA is a universally distinctive and strong trademark which the Respondent should have known at the date of the registration of the domain name, since a search on the local search engine Yahoo identified two entries, one which links to the complainant’s Italian language website, the other which links to a fan site at the address « pernix.bke.hu » that does not appear to have been authorized by the Complainant and since another search on the search engine Excite.co.uk shows a number of sites and names incorporating SAMPDORIA,

– the Complainant has not shown passing off by the Respondent in the UK,

– the Complainant does not show that the Respondent could know its applications dated March 19, 1999, when it registered the domain name on March 23, 1999,

– the transfer has been requested on the ground of a worldwide registered trademark and the Respondent replied by e-mail that it did not believe that the complainant had exclusive worldwide rights on SAMPDORIA and asked for explanations, but the Complainant did not answer,

– the Complainant has three domain names which incorporate SAMPDORIA and has not sought to register in relevant local territories « sampdoria.co.uk » for UK, « sampdoria.fr » for France or « sampdoria.es » for Spain,

– the Respondent does not compete with the Complainant who is not a public house and, as such, can own a « .com » domain name,

– the Respondent does not attract commercial or create a confusion since no website is operated at « sampdoria.com » and since that domain name is not associated with selling products or services covered by the trademark.

6. Discussions and findings

6.1 To the question: the domain name is identical or confusingly similar to the trademark

Paragraph 4 (a) i of the Uniform Policy requires that the « domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights ».

The American trademark application has not yet been registered and no document concerning the other applications has been provided.

As a consequence, the Complainant justifies having trademark rights only in Italy.

The domain name at issue is identical to the Italian trademark SAMPDORIA.

6.2 To the question: the Respondent has no rights or legitimate interests in respect of the domain name

The respondent has not provided evidence of circumstances of the type specified in paragraph 4 (c) of the Uniform Policy, or of any other circumstances that could demonstrate rights or legitimate interests in respect of the domain name.

6.3 To the question: the domain name has been registered and is being used in bad faith

The Complainant did not provide evidence of circumstances such as those specified in paragraph 4 (b) of the Uniform Policy or of any other circumstances that could demonstrate both the registration and the use in bad faith of the domain name.

There is no evidence that the Respondent intended to conceal its true identity and registered the domain name to make commercial profit of the trademark and to attempt to create a likelihood of confusion with the official sites of the Complainant.

The Complainant does not give evidence that its trademark is a well-known trademark in the meaning of article 16 of the TRIP’s agreements.

If, once the domain name is used by the Respondent, the Complainant considers that this use creates a likelihood of confusion, it could defend its rights and start a legal action on the basis of trademark infringement.

7. Decision

For all the foregoing reasons, the single Panelist decided that the domain name is identical to the trademark, that the Respondent has no right or legitimate interest in respect of the domain name at issue, but that the Complainant did not give evidence that the domain name at issue has been registered and used in bad faith.

According to Paragraph 15 (a) of the Rules and of paragraph 4 (a) of the Uniform Domain name dispute resolution policy, the Complainant must prove each of the three elements cited under this paragraph.

The third element is the evidence that the domain name has been registered and is being using in bad faith, what is not proved by the Complainant.

As a consequence, the remedy requested by the Complainant is denied and the domain name « sampdoria.com » shall not be transferred to the Complainant.

Alain Bensoussan

Single Panelist

Dated: July 17, 2000